`571-272-7822
`
`Paper 39
`Entered: July 8, 2015
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`METRICS, INC., MAYNE PHARMA, and JOHNSON MATTHEY, INC.,
`Petitioner,
`
`v.
`
`SENJU PHARMACEUTICAL CO., LTD., BAUSCH & LOMB, INC., and
`BAUSCH & LOMB PHARMA HOLDINGS CORP.,
`Patent Owner.
`____________________
`
`
`
`Case IPR2014-01041 (Patent 8,129,431 B2)
`Case IPR2014-01043 (Patent 8,669,290 B2)1
`____________________
`
`Before FRANCISCO C. PRATS, ERICA A. FRANKLIN, and
`GRACE KARAFFA OBERMANN, Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`JUDGMENT
`Granting Joint Motion to Terminate and
`Granting Joint Request to Treat Settlement Agreement as Confidential
`37 C.F.R. §§ 42.73, 42.74
`
`
`
`
`
`
`1 This order addresses issues common to both cases; therefore, we issue a
`single order to be entered in each case. The parties are authorized to use this
`style heading when filing an identical paper in both proceedings, provided
`that such heading includes a footnote attesting that “the word-for-word
`identical paper is filed in each proceeding identified in the heading.”
`
`
`
`
`IPR2014-01041 (Patent 8,129,431 B2)
`IPR2014-01043 (Patent 8,669,290 B2)
`
`
`On July 1, 2015, pursuant to Board authorization, the parties filed a
`
`joint motion to terminate each proceeding identified in the caption.
`
`Paper 37.2 With each joint motion, the parties filed a copy of their written
`
`settlement agreement, covering various matters involving the patents under
`
`review. Ex. 2027. The parties concurrently filed a joint request in each
`
`proceeding to treat their written settlement agreement as business
`
`confidential information, to be kept separate from the patent file pursuant to
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`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 38.
`
`The parties advance Exhibit 2027 as a true copy of the parties’ written
`
`settlement agreement, Paper 37, 1, and “certify that there are no collateral
`
`agreements or understandings made in connection with, or in contemplation
`
`of, the termination of the inter partes review.” Id. at 2. The parties attest
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`that their agreement “ends all patent disputes between the parties, including”
`
`these inter partes reviews. Paper 37, 7. The parties also submit a copy of a
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`stipulated consent judgment and injunction entered on June 30, 2015, which
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`terminated their related district court litigation. Ex. 2028; see Paper 37, 3.
`
`The Board generally expects that a trial will terminate after the filing of a
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`settlement agreement. See Office Patent Trial Practice Guide, 77 Fed. Reg.
`
`48756, 48768 (Aug. 14, 2012).
`
`
`
`
`
`2 Paper and Exhibit numbers are identical in IPR2014-01041 and IPR2014-
`01043. Substantially similar joint motions to terminate were filed in each
`proceeding.
`
`2
`
`
`
`
`
`
`
`IPR2014-01041 (Patent 8,129,431 B2)
`IPR2014-01043 (Patent 8,669,290 B2)
`
`
`The relatively early stage of these inter partes reviews counsels
`
`against proceeding to a final written decision. The reviews were instituted
`
`on February 19, 2015. Paper 19. Patent Owner has not yet filed a Response,
`
`which is due on July 27, 2015. Paper 36. As such, the record is incomplete
`
`and, lacking Patent Owner’s Response, is tilted towards Petitioner. We are
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`not inclined to move forward to a final decision on this record.
`
`The parties identify a number of ongoing district court actions, and
`
`inter partes reviews, involving Patent Owner and entities other than
`
`Petitioner. Id. at 2–6. Most significantly, on March 19, 2015, an unrelated
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`entity filed petitions challenging the patents under review and, concurrently
`
`therewith, filed motions to join with these proceedings; motions that
`
`Petitioner here has opposed. See Paper 34 (Petitioner’s opposition to
`
`joinder). One factor, informing our decision to grant the parties’ joint
`
`motion to terminate the instant proceedings, is that the unrelated petitioner in
`
`those other cases is not facing a time bar in the absence of joinder. See
`
`IPR2015-00902, Paper 3, 2; IPR2015-00903, Exhibit 0, 2 (motions for
`
`joinder, stating that underlying litigation was filed November 3, 2014); see
`
`also Exhibit 2001, 8 (hearing transcript in related cases, in which counsel for
`
`both parties confirm that the petitions in the related proceedings will not be
`
`time-barred in the absence of joinder); 35 U.S.C. § 315(b), (c) (explaining
`
`statutory bar, and the exception that applies to joinder).
`
`Taking account of all of the circumstances, including the
`
`incompleteness of the record and the fact that Petitioner and Patent Owner
`
`have resolved all of their outstanding patent disputes, the Board determinates
`
`3
`
`
`
`
`
`
`
`IPR2014-01041 (Patent 8,129,431 B2)
`IPR2014-01043 (Patent 8,669,290 B2)
`
`
`that it is appropriate to terminate the proceedings without rendering a final
`
`written decision. 37 C.F.R. § 42.72.
`
`
`
`It is
`
`ORDERED that the joint motion to terminate the proceedings is
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`granted in each proceeding;
`
`FURTHER ORDERED that the joint request that the settlement
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`agreement be treated as business confidential information, to be kept
`
`separate from the patent file, is granted in each proceeding; and
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`FURTHER ORDERED that each proceeding is terminated.
`
`
`
`4
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`
`
`IPR2014-01041 (Patent 8,129,431 B2)
`IPR2014-01043 (Patent 8,669,290 B2)
`
`
`
`
`PETITIONER:
`
`Patrick McPherson
`Vincent Capuano
`Duane Morris LLP
`pdmcpherson@duanemorris.com
`VCapuano@duanemorris.com
`
`PATENT OWNER:
`
`Bryan Diner
`M. Andrew Holtman
`Justin Hasford
`Jonathan R. Stroud
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP
`bryan.diner@finnegan.com
`andy.holtman@finnegan.com
`justin.hasford@finnegan.com
`jonathan.stroud@finnegan.com
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`5
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